Apple has lost an appeal to the Australian Federal Court to register its “APP STORE” trade mark in Australia because its trade mark is unable to distinguish its goods and services.

Apple filed a trade mark for the words “APP STORE” on 18 July 2008 and it received an objection based on the existence of previous similar marks. This issue was resolved and the trade mark was accepted.

However, this acceptance was subsequently revoked and a new objection to the registration of the “APP STORE” trade mark was raised, based on the fact that the trade mark was not capable of distinguishing the applicant’s goods and services.

Apple requested a hearing on this issue. In this decision, the Registrar decided to maintain the ground of rejection.

Apple appealed the Registrar’s decision to The Federal Court. The Federal Court has recently dismissed Apple’s appeal in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (3 December 2014).

According to the Federal Court’s decision, “considered over the range of Apple’s specification of services in Classes 38 and 42, and bearing in mind the essentially descriptive nature of the words “app store”, the mark APP STORE is not to any extent inherently adapted to distinguish those services. Further, as with the designated services in Class 35, Apple has not established that, because of the extent to which it had used APP STORE before the filing date, the mark did, at the filing date, distinguish the designated services in Classes 38 and 42 as being Apple’s services and not those of other persons”.

Despite this setback, Apple will still be able to stop other traders from using the term “APP STORE” as a trade mark in Australia because of its previous trade mark registration for “APPSTORE”.